This has been an exciting week in Buckeye Nation – The Ohio State University's football team won the first-ever college football national championship determined by a playoff system, defeating the Oregon Ducks 42 to 20. It has also been an exciting week for College Football Playoff (CFP), the company responsible for managing the new playoff system, in which a committee selects four teams for a two-round playoff (in contrast to the previous system, in which two teams, chosen by polls and computer algorithms, played for the title). The championship game on Monday, broadcast on ESPN, drew more than 33 million viewers, the largest audience in the history of cable television.
COLLEGE FOOTBALL PLAYOFF
But ratings aside, not everything is going well for CFP, which has encountered some snags in its attempts to obtain trademark registrations (in the name of BCS Properties, LLC) for the mark COLLEGE FOOTBALL PLAYOFF in various configurations, some including a football logo design. The U.S. Patent and Trademark Office has, unsurprisingly, taken the position that the words COLLEGE FOOTBALL PLAYOFF are descriptive or generic when applied to a college football playoff and related media. CFP argued that the mark was a "coined, suggestive" term, but the PTO pointed to news articles quoting CFP Executive Director Bill Hancock as saying: "We decided to call the playoff what it is – the College Football Playoff." The PTO was likewise unconvinced by CFP's attempts to show acquired distinctiveness, concluding that the applicant's evidence of the size of its audience and revenues was indicative merely of the great popularity of college football itself, and failed to show that the public saw the phrase COLLEGE FOOTBALL PLAYOFF as an indicator of source. Accordingly, the PTO has refused registration of the word mark in connection with entertainment services in International Class 41 and digital and print media in International Classes 9 and 16, and has required CFP to disclaim the words in its composite logo marks for the same classes.
The PTO has been more lenient, however, with CFP's attempts to register its marks in connection with a variety of merchandise – clothing, key chains, jewelry, mugs, toys, and the like – and has allowed those applications to proceed to publication. But now CFP has run into another obstacle, this time in the form of Lile, Inc., the Nevada company behind the website www.cfbplayoff.com. This site (the domain name for which has been registered since 2007) states that it is "the site devoted to making a Division One College Football playoff a reality." In addition to advocating for a turn of events that has now come to pass (albeit in a different format than Lile proposes), the site appears to offer pick-the-winner contests for fans.
Lile is seeking to register CFBPLAYOFF.COM in Class 41 in connection with "providing a website featuring information relating to the sport of football; providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours." The PTO refused registration on grounds of descriptiveness, so Lile has amended to seek registration on the Supplemental Register. However, the PTO has also suspended Lile's application pending final decisions on CFP's four prior-filed applications containing the words COLLEGE FOOTBALL PLAYOFF.
In response, Lile has gone on the offensive against CFP. Last week, Lile filed a Notice of Opposition against CFP's application to register its composite logo mark in connection with merchandise – the classes in which the PTO did not require a disclaimer of the words COLLEGE FOOTBALL PLAYOFF. Lile asserts that the phrase COLLEGE FOOTBALL PLAYOFF is descriptive and/or generic as applied to branded merchandise, not only entertainment services and media goods. On the same day, Lile also obtained a 90-day extension of time to oppose CFP's application to register the word mark COLLEGE FOOTBALL PLAYOFF in connection with merchandise.
DECIDED ON THE FIELD
Meanwhile, CFP has also submitted two applications to register slightly different versions of its composite logo mark (with the words COLLEGE FOOTBALL PLAYOFF disclaimed in relation to classes 9, 16, and 41) that have been suspended, in turn, pending a final determination on Lile's CFBPLAYOFF.COM application. And Lile, for its part, has also filed two new intent-to-use applications, in connection with its same services, for the marks SETTLED ON THE FIELD and DECIDED ON THE FIELD.
Presumably, what really matters most to CFP is protection of its mark in connection with merchandise. It seems unlikely in the extreme that any third party would infringe CFP's mark by presenting a counterfeit college football playoff (although fantasy leagues and other entertainment media could be a different story), but counterfeit merchandise would clearly undermine the profitability of CFP's licensed merchandise business. It remains to be seen whether this convoluted trademark dispute will be "decided on the field" of a TTAB proceeding, or settled privately between the parties.
Regardless of the outcome, in honor of my husband's alma mater, I will close with this observation: Go Buckeyes!
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